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RULES OF PRACTICE IN INTERFERENCES 



IN THE 



UNITED STATES PATENT OFFICE. 



MOVEMBER, 1876. 









NOV 28 1908 












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UNITED STATES PATENT OFFICE. 



RULES IN INTERFERENCE CASES. 



INTERFERF.NCES. 

51. An '' interference" is a proceeding instituted for the 
purpose of determining the question of priority of invention 
between two or more parties claiming the same patentable 
subject-matter. 

Before the declaration of an interference it is desirable 
that all preliminary questions should be settled by the pri- 
mary examiner, and the issue must be clearly defined ; the 
invention which is to form the subject of the controversy 
must be decided to be patentable, and the claims of the 
respective parties should be put in such condition that they 
will not require alteration after the interference has been 
finally decided, unless the testimony adduced upon the trial 
should necessitate such change. 

Where a party who is required to put his case in proper 
shape for the purposes of an interference delays doing so 
beyond a reasonable time specified, the interference will at 
once proceed. After final judgment of priority the applica- 
tion of such party will be held for revision and restriction, 
subject to interferences with other applications or new 
references. 

An interference will be declared in the following cases : 

First. When two or more parties have applications pend- 
ing before the Office at the same time, and their respective 
claims conflict in whole or in part. 

Second. When two or more applications are pending at 
the same time, in each of which a like patentable invention 
is shown or described, and claimed in one though not spe- 
cifically claimed in all of them. 

Third. When an applicant, having been rejected upon any 
unexpired patent, claims to have made the invention before 
the patentee. 

Applications for reissue of patents are included in the 
above classification, and will be put in interference with sub- 
sequent as well as prior patents when in conflict therewith. 

Where a preliminary interference is declared on matter 
1 I 



Interferences. 



When declared. 



2 

shown but not claimed in the application last filed, the ap- 
plicaut must, in order to avoid the continuance of the inter- 
ference, disclaim invention of the particular matter so shown. 

wiS'patents'!''' '^^' ^^^ ^'^^^ ^^^^ ^^^ ^^ ^hc partlcs has already obtained 
a patent will not prevent an interference; for, although the 
Commissioner has no power to cancel a patent already is- 
sued, he may, if he finds that another person was the prior 
inventor, give him a patent also, and thus place both parties 
on an equal footing before the courts and the public. 

When a patent is involved in an interference the assign- 
ees as well as the inventor will be notified. 

teSreS%ro^ ^^' ^^^'^^^ ^he dcclaratiou of an interference proper a 

ceedings. preliminary interference will be declared, in which the pri- 

mary examiner will briefly and concisely define the inter- 
fering subject-matter, and specify the claims embracing 
the same ; and also notify the respective parties when the 
applications of the other parties were filed, together with 
their names and residences. Each party to the interfer- 

stSeminTs!"^'^^"^*^ will bc required to file a brief statement under oath, 
showing the date of the original conception, the date that 
the invention was reduced to drawings or model, the date of 
its completion, and the extent of use. The parties will be 
strictly held in their proof to the dates set up in their pre- 
liminary statements. This statement must be sealed up 
before filing, (to be opened only by the examiner of inter, 
ferences,) and the name of the party filing it and the sub- 
ject of the invention indicated on the envelope. 

These statements shall not be open to the inspection of 
the opposing j^arties until both have been filed, or until the 
time for filing both has expired ; nor then, until they have 
been examined by the proper officer and found to be satis- 
factory. At the time of the examination of the preliminary 
statements the examiner of interferences will also make an 
examination of the x>reliminary declaration, (instituted by 
the primary examiner,) in order to ascertain whether or not 
the issue between the parties has been clearly defined. If 
it be found, upon such examination, that the preliminary 
declaration is ambiguous in this particular, the interference 
will be suspended and the case returned to the primary ex- 
aminer for amendment. 
Effect of prelim- jf ^|jg party upou whom rests the burden of proof fails 

mary statement. l kj l l 

to file a preliminary statement, or if his statement fails to 
overcome the pritnafacie case made by the respective dates 
of application, the other party will be entitled to an im- 
mediate adjudication of the case upon the record. 
If the earlier applicant fails to file a preliminary state- 



ment, no testimonj^ will subsequently be received from him 
going to prove that he made the invention at a date prior 
to his application. The preliminary statement can in no 
case be used as evidence in behalf of the party making it. 
Its use is to determine whether the interference shall be 
proceeded with, and to serve as a basis of cross-examina- 
tion for the other party. 

If eitLier party requires a postponement of the time for 
filing the preliminary statements he must present his rea- 
sons therefor, in the form of an affidavit, prior to the day 
previously fixed upon. 

54. Where no testimony is taken by the applicant upon Hearing of mter- 
whom rests the burden of proof, or where testimony has 

been taken by such applicant but not by the other party 
during the time assigned to the latter, the case will be 
considered closed ; upon motion duly made at the expira- 
tion of the time assigned to such parties, respectively, the 
case may be set for hearing at any time, not less than ten 
days thereafter. 

55. In cases of interference appeals may be taken to the 
examiners-in chief and to the Commissioner, in the manner 
provided in Rule 48. 

5Q. When an interference is declared, notice will be given Notice to parties 

111 • , • i TTT-ri ^ 1 of interference. 

to both parties, or to their attorneys. When one of the 
parties has received a patent, duplicate notices will be sent 
to the patentee and to his attorney of record. Where one 
of the parties resides abroad and has no known agent in the 
United States, in addition to the notice sent by mail, notice 
may be given by publication in a newspaper of general cir- 
culation in the city of Washington, once in a week for three 
successive weeks. 

57. In cases of interference the party who first filed so order in taking 
much of his application for a patent as is required by Eule ^^ ^°^*^°y- 

7 will be deemed the first inventor in the absence of all 
proof to the contrary. A time will be assigned in which 
the other party shall complete his direct testimony ; and a 
further time in which the adverse party shall complete the • 
testimony on his side; and a further time in which the 
party who first took testimony may take rebutting testi- 
mony, but shall take no other. If there are more than two 
parties, the times for taking testimony will be so arranged 
that each shall have a like opportunity in his turn, each 
being held to go forward and prove his case against those 
who filed their application before him. 

58. If it becomes necessary for either party to have the Postponement. 
time for taking his testimony, or for the hearing, postponed, 



solve 



he must make application for such postponement, and must 
show sufficient reason for it by affidavit, as provided in Rule 
113, filed before the time previously appointed has elapsed, 
if practicable; and must also furnish his opponent with 
copies of his affidavits, and with reasonable notice of the 
time of hearing his motion. 

Moiiou to dig. 59. After the declaration of the interference, and before 
the time for filing the preliminary statements has expired, 
motions to dissolve the same, on the ground of lack of nov- 
elty, or that no interference in fact exists, or that there has 
been such other irregularity in declaring the same as will 
preclude the proper determination of the question of right 
between the parties, must be made before the examiner by 
whom the interference was instituted. An appeal from his 
decision may be taken to the Commissioner in person ; but 
if the examiner should decide that the subject-matter is not 
patentable, in view of the state of the art, the interference 
will be dissolved, and the matter decided upon can be pro- 
ceeded with ex parte. 

Proceedings After thc declaration of the interference proper, it will 

after declaration *■ ^ ' 

proper. not be determined without judgment of priority founded upon 

the testimony or the written concession of one of the parties. 
In their decision of the question of priority;, the examiner 
of interferences or the examiner-in-chief, as the case may be, 
will direct the attention of the Commissioner to any fact not 
relating to i^riority which may have come to their atten- 
tion, (by motion or otherwise,) and which, in their opinion, 
amounts to a statutory bar to the grant of a patent to either 
or both parties. After final judgment the primary exam- 
iner will consider and determine any such matters not pre- 
viously disposed of by the Commissioner. 

It at any time during the continuance of an interference 
the primary examiner discovers new references, he may 
request a suspension of the interference for their considera- 
tion; but, after testimony has been taken, new parties will 
not be admitted into the interference. 

Where final judgment of priority has been rendered in 
favor of an applicant whose application has passed to 
issue, the final fee been paid, and nothing more remains to 
be done but to issue the patent, the patent will not be with- 
held for the purpose of putting such application in interfer- 
ence with any application filed subsequent to the rendition 
of such judgment and the payment of said final fee, but a 
new interference may be declared with the patent. 

If judgment be based upon a concession of priority by 
either of the parties, such concession must be in writing, 



Amendments 



and under the signature of the inventor liimself ; and if there 
has been an assignment, the assignee must join in the con- 
cession. 

60. No amendments to the specification will be received 
during the pendency of an interference, except as provided 
in section 61, nor will the reissue of a patent be allowed 
while the patent is in interference. A second interference 
will not be declared upon a new application on the same in- 
vention filed by either party during the pendency of an inter- 
ference, or after judgment, nor a rehearing be granted, unless Rehearings 
it be shown to the satisfaction of the Commissioner that the 

party desiring a new interference or rehearing has new and 
material testimony which he could not have procured in time 
for the hearing, or unless other sufficient reasons be shown. 

61. When an application is adjudged to interfere with a 
part only of another pending application, the interfering 
parties will be permitted to see or obtain copies of so much 
only of the specifications as refers to the interfering claims. 
And either party may, if he so elect, withdraw from his 
application the claims adjudged not to interfere, and file a 
new application therefor : Provided, That the claims so with- 
drawn cover inventions which do not involve the devices in 
interference: And provided also; Tha>t the devices in inter- 
ference are eliminated from the new application. In such 
case the latter will be examined without reference to the 
interference from which it was withdrawn. 



Partial interfer- 
ence. 



/ 



TAKING AND TRANSMITTING TESTIMONY. 



113. In extension, interference, and other contested cases, 
the following rules have been established for taking and 
transmitting testimony : 

First. Before the deposition of a witness or witnesses is Notice to be 
taken by either party, due notice shall be given to the oppo- ^^^®°* 
site party, as hereinafter provided, of the time and place 
when and where such deposition or depositions will be 
taken, with the names and residences of the witness or wit- 
nesses then and there to be examined, so that the opposite 
party, either in person or by attorney, shall have full oppor- 
tunity to cross-examine the witness or witnesses : Provided, 
That if the opposite party, or his counsel, be actually pres- 
ent at the taking of testimony, witnesses not named in the 
notice may be examined, but not otherwise ; and that neither 
party shall take testimony in more than one place at the 
same time, nor so nearly at the same time as not to allow 
reasonable time to travel from one place of examination to 
the other. 



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Second. The notice for taking testimony must be served 
by delivering a copy to the adverse party, or his agent or 
attorney of record or counsel, as provided in Rule 77, or by 
leaving a copy at the party's usual place of residence with 
some member of the family who has arrived at the years of 
discretion, or by leaving the same at the office of the attor- 
ney; and such notice shall, with proof of service of the same, 
and a certificate duly sworn to, giving the manner and time of 
making the service, be attached to the deposition or deposi- 
tions, whether the party cross-examine or not. 

Third. The magistrate before whom the deposition is taken 
must append thereto his certificate, stating the time and 
place at which it was taken, the name of the witness, the 
administration of the oath, at whose request the testimony 
was taken, the occasion upon which it is intended to be 
used, the names of the adverse party, (if any,) and whether 
they were present ; and immediately upon the close of the 
examination he shall securely seal up all the evidence, &c., and 
forward the same forthwith to the Commissioner of Patents, 
making upon the envelope a certificate giving the title of 
the case and the date of sealing and addressing the package. 

Fourth. (Relates to extensions.) 
Proceedings if Fifth. If either party shall be unable, for good and suffi- 

testimony cannot . ,• . j_i i -• /• •- • l. 

be obtained. cicut rcasous, to procurc the testimony or a witness or wit- 
nesses within the stipulated time, it shall be the duty of 
said party to give notice of the same to the Commissioner 
of Patents, accompanied by statements under oath of the 
causeof such inability, and of the names of such witnesses, and 
of the facts expected to be i^roved by them, and of the steps 
which have been taken to procure said testimony, and of the 
time or times when efforts have been made to procure it j which 
notice to the Commissioner shall be received by him previ- 
ous to the day of hearing aforesaid. Copies of the papers, 
and notice of any motion based upon them, must also be 
served upon the opposite party, as provided in Rule 50. 
Introducing ca- Sixth. Whcncver a party relies upon a caveat to estab- 

books.'^^^'''^ "^'^"^ lish the date of his invention, the caveat itself, or a certi- 
fied copy thereof, must be filed in evidence, with due notice 
to the opposite party, as no notice can be taken by the 
Office of a caveat filed in its secret archives. 

The official records of the Office, and the books and docu- 
ments contained in the library, and other books in general 
circulation may be used at the hearing ; but notice of any 
special matter contained therein, upon which a party relies, 
should be given to the opposite party previous to the day 
set for closing testimony. 



114. The folios of each deposition must be numbered con- Depositions how 

^ drawn up, 

secutivel}', and the name of the witness be plainly and con- 
spicuously written at the top of each folio. It is deemed 
desirable that the testimony be taken upon legal cap paper, 
with a wide margin on the left-hand side of the page, and 
that only one side of the sheet be written upon. 

115. The testimony may be taken in narrative form ; but, Form of testi- 
if either party desires it, it must be taken in answer to in- '^°°^" 
terrogatories, having the questions and answers committed 

to writing in their regular order by the magistrate, or, un- 
less by consent, by some person not interested in the case 
either as a party thereto or as attorney. The deposition, 
when complete, must be signed by the witness. 

116. No evidence touching the matter at issue will be Excluding depo- 
considered upon the day of hearing which shall not have 

been taken ind filed in compliance with these rules ; but 
no notice will be taken of any merely formal or technical 
objection which shall not appear to have wrought a sub- 
stantial injury to the party raising it; and in such case it 
should be made to appear that, as soon as the party became 
aware of the objection, he immediately gave notice thereof 
to the Office, and also to the opposite party, informing him 
at the same time that, unless corrected, he shall urge his 
objection at the hearing ; but this rule is not to be con- 
strued so as to modify well-established rules of evidence, 
which will be applied strictly in all practice before the 
Office. 

117. The law requires the clerks of the various courts of subpoenas for 
the United States to issue subpoenas to secure the attend- '^Jt^esses. 
ance of witnesses whose depositions are desired to be read 

in evidence in any contested cases in the Patent Office. 

118. In contested cases, whether of interference or of ex- ^ ,. 

' Testimony, when 

tension, parties may have access to the testimony on file op«°- 
prior to the hearing, in presence of the officer in charge ; 
and copies may be obtained by them at the usual rates. 

As a general rule printed copies of the testimony will be Printing of it re- 
requiied; but this requirement may be dispensed with on *^^^^^ ' 
special application to the Commissioner, and showing satis- 
factory reasons therefor. 

After the testimony is filed in the Office it will not be al- 
lowed to be withdrawn by the parties for the purpose of 
printing; but the testimony may be printed by some one 
specially designated by the Office for that purpose, under 
proper restrictions. 

Three printed copies should be furnished, two for the use 
of the Office, and one for the use of the opposing party. 



8 

These copies mast be filed not less than. one week previous 
to the day of hearing. 

It is also desirable that all arguments should be sub- 
mitted in priuted form, and all arguments filed at least two 
days previous to the day of hearing. 
Service of notice 77. Service of uotice to take testimony may be made 

to take testimony. u ^ 

upon applicant, upon the opponent, upon the attorney of 
record of either, or, if there be no attorney of record, upon 
any attorney or agent who takes part in the service of 
notice or in the examination of the witnesses of either party. 
Where notice to take testimony has already been given to 
an opponent, and a new opponent subsequently gives 
notice of his intention to oppose, the examination need not 
be postponed, but notice thereof may be given to such sub- 
sequent opponent by mail or by telegraph. This rule, how- 
ever, does not apply to exparte examinations, or those of 
which no notice has been given when notice of opposition 
is served. 
Appeal in iu- 48. lu cascs of interference parties have the same remedy 
no'n^rTo^ rap?e?ne ^y appeal to the examiners-in-chief, and to the Commis- 
^^"'"^" sioner, as in ex-jyarte cases ; but no appeal lies in such cases 

from the decision of the Commissioner. Appeals in inter- 
ference cases should be accompanied with a brief statement 
of the reasons therefor; and both parties will be required 
to file briefs of their arguments at least five days before the 
day of hearing. Printed briefs are in all cases preferred. 

HEARINGS. 

Hearings regu- 49. All cases pcudiug bcforc the Commissioner, the board 
latins for. ^^ examiners-iu-chief, or the examiner in charge of inter- 

ferences, will stand for argument at 12 o'clock on the day 
of hearings unless some other hour be specially designated. 
If either party in a contested case, or the appellant in an 
ex-parte case, appears at that time, he will be heard ; bat a 
contested case will not be taken up for oral argument after 
the day of hearing, except by consent of both parties. If 
the engagements of the tribunal before whom the case is 
pending are such as to prevent it from being taken up on 
the day of hearing, a new assignment will be made, or the 
case will be continued from day to day until heard. Unless 
otherwise ordered before the hearing begins, oral arguments 
will be limited to one hour for each counsel. After any 
case has been argued, nothing further relating thereto will 
be heard unless requested by the tribunal having the decis- 
ion of the case ; and all interviews for this purpose with par- 
ties in interest or their attorneys will be invariably denied. 



MOTIONS. 

50. Id contested cases reasonable notice of all motions, Motions, regnia- 
and copies of the motion, papers and affidavits, must be 
served upon the opposite party or his attorney. Proof of 
such service must be made before the motion will be enter- 
tained by the Office ; and motions will not be heard in the 
absence of either party except upon default after due notice. 
Motions will be heard in the first instance by the officer or 
tribunal before whom the particular case may be pending ; 
but an appeal from the decision rendered may be taken to 
the Commissioner in person. 



DEPOSITIONS. 

Form 47. Notice of taking testimony. 

Boston, Massachusetts, 

March 29, 1869. 
Tn the matter of the interference between the application 
of A. B., for a paper-collar machine, and the patent No. 
85,038, granted December 15, 1868, to 0. D., now pending 
before the Commissioner of Patents. 
Sir : You are hereby notified that on Wednesday, March 
31, 1869, at the office of E. F., esq., No. 30 Court street, Bos- 
ton, Massachusetts, at nine o'clock in the forenoon, I shall 
proceed to take the testimony of G-. H., J. K., and L. M., 
an of Boston, as witnesses in my behalf. 

The examination will continue from day to day until com- 
pleted. You are invited to attend and cross-examine. 

A. B., 
By E. Q., 
His Attorney. 



Providence, Rhode Island. 

Proof of service. 

State of , County of , ss : 

Personally appeared before me, a justice of the peace, the 
above-named A. B., who, being duly sworn, deposes and 
says that he served the above notice upon O. P., the attor- 
ney of the said C. D., at one o'clock p. m. of the 30th day of 
March, 1869, by leaving a copy at his office in Providence, 
Ehode Island, in charge of his partner, E. S. 

A. B. 

Sworn to and subscribed before me this 31st day of 
March, 1869. 
2 I 



10 

(Service may be acknowledged by the party upon whom 
it is made as follows : 
Service of the above notice acknowledged. 

O. D., 
By E. F., 
His Attorney.) 

Form 48. Deposition. 

Before the Commissioner of Patents, in the matter of the 
interference between the application of A. B., for a paper- 
collar machine and the letters-patent No. 85,038, granted 
December 15, 1868, to 0. D. 
Depositions of witnesses examined on behalf of A. B., 

pursuant to the annexed notice, at the office of E. F., No. 

30 Court street, Boston, Massachusetts, on Wednesday, 

March 31, 1869. Present, S. T., esq., on behalf of A. B., 

and y. W., esq., on behalf of C. D. 

G. H. (1.)* 

G. H., being duly sworn, (or affirmed,) doth depose and 

say, in answer to interrogatories proposed to him by S. T., 

esq., counsel for A. B., as follows, to wit : 

Question 1, What is your name, age, residence, and occu- 
pation ? 
Answer 1. My name is G. H.; I am forty-three years of 

age ; I am a manufacturer of paper collars, and reside in 

Chelsea, Massachusetts. 
Question 2, &c. * # # * # 

And in answer to cross-interrogatories proposed to him 

by y. W., esq., counsel for C. D., he saith : 
Cross-question 1. How long have you known A. B. ? 
Aimw^pr 1 4t ^ ^ # # '3(' 

G. H. 

(* See Rule 114.) 

Form 49. Certificate of officer. 

(To follow deposition.) 

State of , County of , ss : 

At Boston, in said county, on the 31st day of March, 
A. D. 1869, before me personally appeared the above-named 
G. H., and made oath that the foregoing deposition, by him 
subscribed, contained the truth, the whole truth, and noth- 
ing but the truth. The said deposition is taken at the re- 
quest of A. B., at the time and place named in the notice 
hereto attached, to be used upon the hearing of an interfer- 
ence between the claims of the said A. B. aad those of C. 
D. before the Commissioner of Patents on the 3d day of 
May, A. D. 1869. 



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The said 0. D. was duly notified, as appears by the origi- 
nal notice, hereto annexed, and attended by Y. W., esq., his 

counsel. 

E. F., 

Justice of the Feaee, 

The magistrate shall then append to the deposition the 
notice under which it was taken, shall seal up the testimony 
and direct it to the Commissioner of Patents, placing upon 
the envelope a certificate in substance as follows : 

I hereby certify that the within deposition of G. H., [if 
the package contains more than one deposition, give all the 
names,] relating to the matter of interference between A. B. 
and C. D., was taken, sealed up, and addressed to the Com- 
missioner of Patents by me this 26th day of April, A.D. 1869t 

E. F., 
Justice of the Peace. 



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The Official Gazette of tlie United States Patent-Office, published weekly, contains 
all important decisions of the Commissioner of Patents, and decisions of United States 
courts in patent and trade-mark causes. Also a list of all patents issued and all trade- 
marks and labels registered. The claims in full of all patents are published in the 
Gazette, together with such a portion of the drawing and brief description as will give 
a general idea of the invention. Subscription price, established by law, five dollars 
per annum. 

Patent-Office coupons, which purchase a copy of any drawing which has been photo- 
lithographed, are sold singly by the Patent Office at twenty-five cents each, or twenty 
coupons at one time for two dollars. Where specifications are in print they are fur- 
nished with the drawings without extra charge. 



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